Ex parte Zaromb

Board of Patent Appeals and Interferences

Dec 20, 1999

08154135 (B.P.A.I. Dec. 20, 1999)

Application for patent filed November 18, 1993. 1
According to appellant, the application is a division of
Application No. 07/648,649, filed January 31, 1991, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SOLOMON ZAROMB
____________
Appeal No. 1996-1556
Application No. 08/154,1351
____________
HEARD: December 9, 1999
____________
Before PAK, WALTZ, and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 1, 3 through 10, 12, 15 through 17 and
21 through 23. Claim 1, 10, 16 and 17 were amended subsequent
to the final Office action dated May 22, 1995, Paper No. 11.
Appeal No. 1996-1556
Application No. 08/154,135
2
The remaining claims, namely claims 11, 13, 14 and 18, stand
withdrawn from consideration by the examiner.
Claims 1 and 10 are representative of the subject matter
on appeal and read as follows:
1. A method of testing a sampled gas for the presence of a
selected analyte comprising the steps of:
providing an amperometric sensor, having a substantially
water-free, non-hygroscopic, water-insoluble, solid-state
electrolyte that has an ionic conductivity of at least 10 ohm-4 -
-cm at room temperature, said sensor exhibiting sensitivity1 -1
to the selected analyte;
exposing said sensor to the sampled gas; and
measuring current flow in said sensor upon the presence
of said analyte in said sampled gas.
10. A method of producing an amperometric sensor for use in
detecting selected analytes which comprises:
applying a sensing electrode and a counter-electrode to a
solid-state electrolyte, and
providing a biasing circuit for applying a biasing
potential between said electrodes and a current-measuring
circuit for measuring the current between said electrodes that
is generated by the presence of said analyte,
said electrolyte being characterized by being
substantially water-free, non-hygroscopic, water-insoluble,
and having a composition resulting in an ionic conductivity of
at least 10 ohm -cm at room temperature.-4 -1 -1
The prior art references of record relied upon by the
examiner are:
Appeal No. 1996-1556
Application No. 08/154,135
3
Lilly Jr. et al. (Lilly) 3,719,564 Mar.
6, 1973
Topol et al. (Topol) 3,821,090 Jun. 28,
1974
Madou et al. (Madou) 4,851,303 Jul. 25,
1989
Oswin et al. (Oswin) Re. 31,916 Jun. 18, 1985
The appealed claims stand rejected as follows:
(1) Claims 1, 3 through 8, 10, 12, 15 through 17 and 21
through 23 under 35 U.S.C. § 103 as unpatentable over Madou;
(2) Claims 1, 3 through 8, 10, 12, 15 through 17 and 21
through 23 under 35 U.S.C. § 103 as unpatentable over Madou in
view of Lilly or Topol; and
(3) Claim 9 under 35 U.S.C. § 103 as unpatentable over Madou,
with or without Lilly or Topol, in view of Oswin.
We reverse.
As evidence of obviousness of the claimed subject matter
under 35 U.S.C. § 103, the examiner primarily relies on Madou.
The examiner takes the position that Madou essentially
describes the claimed method. See Answer, page 3. According
to the examiner, the only difference between the method
described in Madou and the claimed method is Madou’s
preference for operating a solid electrolyte gas sensor in the
potentiometric mode, rather than the claimed current mode,
Appeal No. 1996-1556
Application No. 08/154,135
4
i.e, using an amperometric sensor. Id. However, relying on
the teaching of Madou regarding the current mode, or
alternatively based on his official notice regarding the
current mode, the examiner concludes that “[i]t would be
obvious for Madou to use electrolytes (c) or d(d)[Pb -Bi -0.75 0.25
F and Ce -Ca -F ] in a gas sensor in the current mode”. 2.25 0.95 0.05 2.95
Id. The examiner also relies on the disclosure of Lilly or
Topol to show that it would have been obvious to one of
ordinary skill in the art to operate a solid electrolyte gas
sensor in the current mode. See Answer, page 4. The examiner
relies on the disclosure of Oswin to show that it would have
been obvious to use “a plurality of sensors and voltage
biasing means for different analytes” in the method described
in Madou as required by dependent claim 9. Id.
Appellant does not dispute that Madou is qualified as
“prior art” under 35 U.S.C. § 102 (b). See Brief, pages 6 and
7. Appellant, however, argues that he cannot be barred from
swearing back of such prior art under 37 CFR § 1.131 because
35 U.S.C.
§ 103 dictates that obviousness must be considered at the time
the invention was made (conceived). See Brief, pages 7 and 8.
Appeal No. 1996-1556
Application No. 08/154,135
5
Appellant then argues that his own declaration of record
establishes that the conception date of the claimed invention
is prior to the publication and filing dates of the Madou
reference. See Brief, page 8. Thus, appellant submits that
the examiner has not established a prima facie case of
obviousness since Madou is no longer available as “prior art”.
Id. In the alternative, appellant submits that the content of
Madou would not have suggested using the claimed solid
electrolyte in a gas sensor that operates in the current mode
(an amperometric sensor). See Brief, pages 8-14. Appellant
also takes the position that the deficiencies of Madou are not
remedied by the disclosures of Lilly, Topol and Oswin. See
Brief, pages 11-14.
We agree with the examiner that appellant is barred from
swearing behind back the publication and filing dates of the
Madou reference since it is qualified as “prior art” under 35
U.S.C.
§ 102(b). We observe that 37 CFR § 1.131 (a)(1993) prohibits
appellant from antedating prior art which is available under
Section 102(b). 37 CFR 1.131(a) specifically states that:
Appeal No. 1996-1556
Application No. 08/154,135
6
(a) When any claim of an application or a patent
under reexamination is rejected on reference to
a domestic patent which substantially shows or
describes but does not claim the same patentable
invention, as defined in § 1.601(n), as the
rejected invention, or on reference to a foreign
patent or to a printed publication, and the
inventor of the subject matter of the rejected
claim, the owner of the patent under
reexamination, or the person qualified under §§
1.42, 1.43 or 1.47, shall make oath or
declaration as to facts showing a completion of
the invention in this country before the filing
date of the application on which the domestic
patent issued, or before the date of the foreign
patent, or before the date of the printed
publication, then the patent or publication
cited shall not bar the grant of a patent to the
inventor or the confirmation of the
patentability of the claims of the patent,
unless the date of such patent or printed
publication is more than one year prior to the
date on which the inventor's or patent owner's
application was filed in this country.
(Emphasis suplied).
This rule is consistent with the holding in In re Foster, 343
F.2d 980, 989-90, 145 USPQ 166, 174-75 (CCPA 1965), reh'g
denied, 384 U.S. 934 (1966), which indicates that a one-year
time-bar under 102(b), otherwise known as “statutory bar”, is
applicable to “obviousness” situations under 35 U.S.C. § 103.
Having concluded that Madou cannot be removed as “prior
art”, we look to its content to determine whether there is a
sufficient suggestion to arrive at the claimed invention
Appeal No. 1996-1556
Application No. 08/154,135
7
within the meaning of 35 U.S.C. § 103. As indicated by
appellant, Madou discloses an extremely broad genus of
chemical compositions which happen to include the claimed
solid electrolyte species. See Brief, page 10, together with
Madou, columns 3 and 4. We find that Madou gives no guidance
or direction as to which solid composition is suitable for an
amperometric sensor. See Brief, page 10, together with Madou
in its entirety. Specifically, we find that Madou does not
recognize the importance of using a water free, non-
hygroscopic, water-insoluble, solid-state electrolyte having
an ionic conductivity of at least
10 ohm cm at room temperature in an amperometric sensor. -4 -1 -1
See Madou in its entirety. Rather, we find that Madou
suggests using a solid electrolyte having an ionic
conductivity of about
10 ohm cm at room temperature, which conductivity is-7 -1 -1
significantly lower than that claimed. Compare Madou, column
7, with claim 1. Under these circumstances, we cannot agree
with the examiner that Madou, as a whole, would have suggested
the use of the claimed solid electrolytes in an amperometric
sensor. In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943
Appeal No. 1996-1556
Application No. 08/154,135
8
(Fed. Cir. 1992). (A prior art disclosure of an extremely
large chemical genus by itself does not necessitate a finding
of obviousness for a claimed feature that falls within the
genus).
The examiner relies on the remaining references to
demonstrate obviousness regarding the operation of a solid
electrolyte gas sensor in the current mode or the application
of a plurality of sensors and voltage biasing means for
different analytes. These references are not relied upon to
show the importance of using a solid electrolyte having the
claimed ionic conductivity in an amperometric sensor.
Accordingly, we conclude that the examiner has not discharged
his burden of establishing a prima facie case of obviousness
within the meaning of 35 U.S.C.
§ 103.
In view of the foregoing, we reverse the examiner’s
decision rejecting the appealed claims under 35 U.S.C. § 103.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSE
Appeal No. 1996-1556
Application No. 08/154,135
9
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
CKP:lp
Appeal No. 1996-1556
Application No. 08/154,135
10
SOLOMON ZAROMB
9 S 706 WILLIAM DRIVE
MINSDALE, IL 60521
Leticia
Appeal No. 1996-1556
Application No. 08/154,135
APJ PAK
APJ WALTZ
APJ KRATZ
DECISION: REVERSE
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: June 21, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM /ACTS 2/BOOK
DISK(FOIA /REPORT